DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 03/02/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the objection to claim 103 has been withdrawn; (2) the 35 U.S.C. §102(a)(1) rejections of claims 93-98, 102, and 108 over Ley have been withdrawn; and (3) the 35 U.S.C. §103 rejections of claims 99 and 101 over Ley have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 93-98, 100, 102-112
Withdrawn claims: None
Previously cancelled claims: 1-92
Newly cancelled claims: 99, 101
Amended claims: 93, 103
New claims: None
Claims currently under consideration: 93-98, 100, 102-112
Currently rejected claims: 93-98, 100, 102-112
Allowed claims: None
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 93-98, 100, 102-105, and 107-112 are rejected under 35 U.S.C. 103 as being unpatentable over Vasquez (US 2005/0123670) in view of Cepanec (WO 2016/185233).
Regarding claims 93, 94, 95, 96, 97, 98, and 100, Vasquez teaches savory compositions comprising a taste modulator composition consisting essentially of a combination of a second taste modulator in the form of calcium chloride, a third taste modulator in the form of potassium chloride, and a first taste modulator in the form a magnesium salt that is preferably magnesium chloride [0039], [0042], [0050] as recited in present claims 93, 95, 96, 97, 98, and 100. Regarding the amounts of the taste modulators recited in present claims 93 and 94, Vasquez teaches the addition of the taste modulator composition to savory compositions (e.g., [0050]), but does not teach the final concentration of the taste modulator components. However, Vasquez does teach 1-3% magnesium salt, 2-15% calcium chloride and 5- 15% potassium chloride in the taste modulator composition that is added to the savory composition [0039, 0042]. These amounts would allow for final concentrations in the savory composition as claimed, where the potassium is present at a higher amount than the magnesium and calcium, and the magnesium and calcium are present in equal amounts. Therefore, given that the composition of the prior art allows for a ratio of components as claimed to be added to savory compositions, the claimed first, second and third taste modulators, as well as their amounts, are considered to be obvious over Vasquez.
Vasquez teaches their composition in savory foodstuffs including soups, broths, sauces and mayonnaise [0050]. However, Vasquez is silent as to the savory compositions additionally comprising an umami agent and in an amount as claimed.
However, Cepanec teaches savory compositions comprising an umami agent and a combination of calcium and magnesium salts (i.e., first and second taste modulators) (page 6, “Summary of Invention’). Where 1 g of the powder of Example 6 of Cepanec is included in 100 g of soup (page 20), this provides the umami agent present at 0.65% by weight of the savory composition. This composition also comprises Mg2+ at 3.6 mM and Ca2+ at 4.99 mM, both falling within the ranges of present claims 93 and 94.
Therefore, given that Vasquez teaches the addition of a taste modulator composition consisting essentially of potassium chloride, calcium chloride, and magnesium chloride to savory compositions, and where Cepanec teaches the same types of savory compositions also comprising an umami agent, it would have been obvious to have utilized an umami agent in a savory composition in combination with the taste modulator composition of Vasquez with the reasonable expectation that a suitably flavored, low-sodium composition would have been provided. Further, one of ordinary skill would have been able to use the final amounts of the taste modulator components (e.g., magnesium and calcium) taught by Cepanec as a guide for the final concentration of the magnesium, calcium, and potassium composition taught by Vasquez. This would have required no more than routine experimentation as all of the claimed components are known to be included in savory compositions and in amounts similar to the claimed amounts in order to provide suitably flavored compositions.
Regarding claims 102 and 103, modified Vasquez teaches the invention as described above in claim 93, including that the umami agent comprises yeast extracts that contain 5’-ribonucleotides including inosine 5’- monophosphate, guanosine 5’-monophosphate, and mixtures thereof (Cepanec, page 7, lines 1-4). Therefore, it would have been obvious to have utilized an umami agent as taught by Cepanec in the savory compositions of Vasquez as the claimed umami agents are taught to be taste improving compounds in savory compositions.
Regarding claims 104 and 105, Vasquez teaches the invention as described above in claim 93, including the composition is a mayonnaise (e.g., Example 1), which is known to include a puree of egg yolk. Further, Cepanec teaches that the umami agent is a yeast extract. Cepanec also teaches that the umami agent may be hydrolyzed vegetable protein (page 6, “Summary of Invention” (i) and (ii)). Therefore, it would have been obvious to have utilized an umami agent as taught by Cepanec in the savory compositions of Vasquez as the claimed umami agents are taught to be taste improving compounds in savory compositions.
Regarding claim 107, Vasquez teaches the invention as described above in claim 93, but does disclose the pH of the compositions. However, given that Vasquez teaches savory compositions according to the invention including soups, sauces, meats, mayonnaise, vegetables, fish and juices [0050], and these compositions are the same types of savory products as taught in the instant specification at [0236]-[0238], the pH of the products of the prior art is considered to meet the claimed pH in the absence of convincing arguments or evidence to the contrary.
As stated in in re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claims 108, 109, and 110, Vasquez teaches the invention as described above in claim 93, including the savory products include food products such as soups, sauces, meats, mayonnaise, vegetables, fish, and juices [0050]. Cepanec also teaches savory compositions including soups (page 26).
Regarding claims 111 and 112, modified Vasquez teaches the invention as described above in claim 93. Given that a savory composition comprising calcium, magnesium, and sodium, as well as an umami agent, is rendered obvious by the combination of Vasquez and Cepanec, the compositions comprising this combination are considered to have an improved mouthfeel as claimed when compared with compositions that do not contain the calcium, magnesium, and potassium salts.
Claim 106 is rejected under 35 U.S.C. 103 as being unpatentable over Vasquez (US 2005/0123670) in view of Cepanec (WO 2016/185233) as applied to claim 104 above, as evidenced by Yeast (Food Chemicals Codex (11th Edition) - Yeast Extract. (page 1260), 2018, The United States Pharmacopeial Convention; https://app.knovel.com/hotlink/pdf/id:kt011ME7JD/food-chemicals-codex/yeast-extract).
Regarding claim 106, Vasquez teaches the invention as described above in claim 104, including that the umami agent is a yeast extract (Cepanec, page 6, “Summary of Invention” (i) and (ii)). Since the umami agent is a yeast extract, the umami agent is considered to be hydrolyzed and fermented as evidenced by Yeast. Therefore, it would have been obvious to have utilized a fermented umami agent as taught by Cepanec in the savory compositions of Vasquez as the claimed umami agents are taught to be taste improving compounds in savory compositions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 93-98, 100, 102-105 and 108-112 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 101-112 of co-pending Application No. 18/676,083 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 93, 94, and 111-112 require the same components, the same concentrations, and the same improved mouthfeel as required by co-pending claims 101-103 and 110-111. Instant claims 95, 96, 97, 98, and 100 require the first, second, and/or third ion to be selected from citrate, sulfate, chloride, and combinations thereof while co-pending claim 112 also requires the first, second, and/or third ion to be selected from citrate, sulfate, chloride, and combinations thereof. Instant claim 102 requires the umami agent to be at least one of the recited ingredients while co-pending claim 107 requires the umami agent to be at least one of the recited ingredients wherein options for the umami agent in the instant claim are the same options for the co-pending claim. Instant claim 103 requires the umami agent to be at least one of the recited ingredients while co-pending claim 108 requires the umami agent to be at least one of the recited ingredients wherein options for the umami agent in the instant claim are the same options for the co-pending claim. Instant claims 104 and 105 require the umami agent to be an autolyzed or hydrolyzed yeast protein or hydrolyzed vegetable protein or for the umami agent to be an extract or puree prepared from a yeast, a vegetable, a cereal, a meat, a fish, a dairy product, or an egg yolk while co-pending claim 109 requires its umami agent to be the same. Instant claim 108 requires the product to be a food product and co-pending claim 104 requires the product to be a food product. Instant claims 109 and 110 require the product to be a pasta sauce or soup as required by co-pending claims 105 and 106.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Claim Objections: Applicant amended claim 103 to fully address the objection. Therefore, the objection is withdrawn.
Claim Rejections – 35 U.S.C. §102(a)(1) of claims 93-98, 102, and 108 over Ley: Applicant’s amendments and arguments have been fully considered and the amendments are considered to overcome the anticipation rejections over Ley. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the combination of Vasquez and Cepanec.
Claim Rejections – 35 U.S.C. §103 of claims 93-101, 104, and 107-112 over Ley; claims 102-103 and 105-106 over Ley as evidenced by Prosol: Applicant’s arguments with respect to claim(s) 93-98, 100, 104, and 107-112 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The rejections of claims 99 and 101 are moot due to the cancelation of these claims.
Double Patenting Rejection: Applicant will address the rejection at such a time that allowable subject matter has been identified (Applicant’s Remarks, page 10, 1st paragraph under “Nonstatutory Double-Patenting Rejection” – page 11, 2nd paragraph).
The double patenting rejection is maintained as written herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/K.P.K./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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